Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) ---------1-5, 10-13 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueki et al. (US 2011/0138762) in view of Wunn et al (US 2015/0007721).
**The object, and any structure associated with the object is considered material to be worked upon and interpreted as discussed in section 2 above.**
As to claims 1 and 17, Ueki discloses a member supplying sheet comprising: a substrate sheet 1; and at least one protective cover member placed on the substrate sheet, wherein the protective cover 2/3 is configured to be placed on a face of an object, the face having an opening, the protective cover member comprising a laminate 2/3, wherein the laminate includes: a protective membrane 3 having a shape configured to cover the opening when the protective cover member is placed on the face (para 34-39 fig 1a-2b, 8a-9d; and an adhesive layer 2 (para 34-39), and when a portion, of the protective membrane, coinciding with the adhesive layer when viewed in a direction perpendicular to a principal surface of the protective membrane is defined as a fixed portion of the protective membrane (para 34-45 fig 1a-2b, 8a-9d, see below), an exposed surface of the protective membrane (entire upper surface of 3) on a side opposite to a side, of the protective membrane, facing the adhesive layer has a region A overlapping the fixed portion when viewed in the perpendicular direction, said region having a water/oil repellent surface (para 34-45, 55-60, fig 1a-2b, 8a-9d, see below); wherein, as viewed in the direction perpendicular to the principal surface of the protective membrane, the adhesive layer is located on a peripheral portion of the protective membrane, wherein a minimum distance from a center of the protective membrane to an outer perimeter of the peripheral portion is defined as L1 wherein a portion of the minimum distance L1 that overlaps the adhesive layer is defined as L2, and wherein a ratio L2/L1 is approximately 0.33 (para 66 – L2 = 2.5mm, L1 = 7.5mm, L2/L1 = 0.33). MPEP 2144.05 (I) states “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”. Applicant’s claimed ratio is 0.3 or less – the 0.03 difference in ratios meets the MPEP 2144.05 (I) standard of “the claimed ranges or amounts do not overlap with the prior art but are merely close” and thus a prima facie case of obvious exists.
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Ueki does not expressly disclose region A having a contact angle of 55 degrees or more for methanol.
However, Wunn discloses that it is known and adventurous to maximize the contact angle for protective membrane surfaces (para 17-24) including contact angles above 55 deg with respect to methanol (para 23). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Ueki such that region A has a contact angle of 55 degrees or more for methanol as taught by Wunn as it is known to maximize the contact angle in order to keep liquid contaminants from passing through the membrane (para 17-20).
As to claim 2, It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Ueki such that the entire exposed surface of the fixed portion on the opposite side has a contact angle of 55 degrees or more for methanol as taught by Wunn above as such achieves the advantages detailed above.
As to claim 3, Ueki discloses the fixed portion is positioned in a peripheral portion of the protective membrane when viewed in the perpendicular direction (see above fig)
As to claim 4, Ueki discloses the adhesive layer is in contact with the protective membrane (see above fig)
As to claim 5, Ueki discloses the adhesive layer is capable of being positioned on a side of placement of the protective cover member on a face of the object with respect to the protective membrane (see above fig).
As to claim 10, Ueki disclosed the protective membrane has gas permeability in a thickness direction of the protective membrane (para 34-45, 55-60, fig 1a-2b).
As to claim 11, both Ueki (para 59) and Wunn (para 21) disclose the protective membrane includes a porous membrane or a microporous membrane, and Wunn discloses the porous membrane and the microporous membrane each have an average pore diameter of 0.01 μm or more and less than 3 μm (para 21).
As to claim 12, Ueki discloses the protective membrane includes a polytetrafluoroethylene membrane (para 18).
As to claim 13, while Ueki does not expressly disclose the protective membrane has an area of 175 mm2 or less, para 64-68 discloses the area is design choice. Thus, one of ordinary skill would have achieved an area of 175 mm2 or less as such is a design choice obvious to one of ordinary skill in the art. Additionally, varying the dimensions is obvious to one of ordinary skill in the art. MPEP 2114.04.
As to claim 15-16, the protective is capable of being placed and used inside a micro electro mechanical system (MEMS) (para 34-45, 55-60, fig 1a-2b).
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueki and Wunn, as applied to claim 1 above, and further in view of Yoneyama et al. (US 2016/0326403).
As to claim 6, While neither Ueki nor Wunn expressly disclose the adhesive layer includes a layer formed of a thermosetting adhesive agent composition. Yoneyama discloses a protective cover with an adhesive layer, wherein the adhesive layers can be selected from several types of adhesives, including thermosetting (para 35). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Ueki and Wunn such that the adhesive layer includes a layer formed of a thermosetting adhesive agent composition as taught by Yoneyama as such has a reasonable expectation of success.
As to claims 7-8, Yoneyama discloses the protective cover member according to claim 6, wherein the thermosetting adhesive agent composition has a storage modulus of 1.0×103 Pa or more at 130 to 170° C and 1.0×108 Pa or less at 130 to 170° C after thermal curing (para 110, table 1, claims 5, 9).
Response to Arguments
Applicant's arguments filed 7/26/26 have been fully considered but they are either moot in light of the new ground of rejection or not persuasive. With respect to previous claim 9, the applicant’s arguments are moot as the claim has been canceled, and the scope of the previous claim 9 limitations incorporated into claim 1 has changed.
With respect to the L2/L1 ratio, applicant asserts an embodiment of Ueki discloses a ratio of approximately 0.33 and thus does not meet the new limitation requiring the ratio to be 0.3 or less. This argument is not persuasive as 0.03 difference meets the MPEP 2144.05 (I) standard stating “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”. See body of rejection above. Furthermore, there is nothing critical about the 0.3 or less ratio that would overcome the prima facie case of obviousness. Para 66 of applicant’s Publication (US 2024/0286389) discloses the ratio “may be 0.5 or less, 0.3 or less, 0.2 or less, or even 0.1 or less”. No portion of the specification discloses a critical difference between a ratio of 0.5 or less and 0.3 or less, let alone a critical difference between a ratio of 0.33 and 0.3 or less.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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